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Rock'n’roll and a hard place: Can Kelly Van Halen register her name as a trade mark?

There may be just a few
topics (of conversation) that are more enticing than trade marks and names.
This is why the IPKat is happy to host a guest contribution from young IP
enthusiast Dorothea Thompson (Davenport Lyons), who reports on a recent story
from the US involving names, trade marks and hard rock.

Here’s what Dorothea
writes:

“The music industry has proved fertile ground
for IP disputes of late, but the lion’s share has focused not on copyright, but
on trade marks, reputation, likeness and passing off (eghere
and here).
And so the trend continues, with the civil action brought against Kelly Van Halen by ELVH,
Inc., the California IP holding company of the rock band VAN HALEN.

In a bygone era of hair and guitar solos
(1984), Kelly Carter married Alex Van Halen, the drummer in the eponymous rock
band, at the peak of their commercial success. Miss Carter became Mrs Van
Halen, and continued as such following the couple's divorce some twelve years
and two children later.

In January 2011, Ms Van Halen filed four
trade mark applications at the USPTO:

- KVH in Classes 24 and 25;

- KVH in Classes 37 and 42;

- KELLYVANHALEN in Classes 20, 24 and 25; and

- KELLYVANHALEN in Classes 37 and 42.

Alex Van Halen

The goods and services included furniture
items, blankets, clothing items, construction, and interior design services.
This list becomes more coherent considering Ms Van Halen’s experience as a
real estate developer, house flipper, and interior designer, apparently appealing to the US equivalent
of the yummy mummy crowd.

The KVH service mark was abandoned, while the KVH trade mark was registered 2011. The KELLYVANHALEN applications,
however, remain pending, subject to opposition by ELVH, Inc. On 18 October
2013, ELVH filed a motion to suspend the opposition proceedings, in view of a
civil action filed in Los Angeles federal court on 10 October.

The Complaint
provides a belt-and-braces eight count claim against Ms Van Halen, alleging
trade mark infringement, dilution, false designation, and unfair competition in
relation to use of KELLYVANHALEN for the specified goods in Classes 20, 24 and
25, and requesting a declaration in relation to future use for the Classes 37
and 42 services applied for. ELVH cites four registrations for VAN HALEN,
covering goods and services in Classes 15 (musical instruments), 16 (paper
goods), 19 (sound and video recordings), 25 (clothing), and 41 (entertainment
services).

Eddie Van Halen

Regarding
infringement, the Complaint contends that the Defendant's apparel, blankets and
other fashion accessories, are “either
identical or closely related to the goods sold by Plaintiff or represent a
natural zone of expansion for Plaintiff and such goods would travel and be
promoted through the same channels of trade for sale to, and use by, the same
class of purchasers”. This does not
appear to address the Class 20 furniture items, however; and the claims
relating to construction and interior design services provide somewhat more of an
imaginative stretch.

Is
it really possible to argue that Kelly Van Halen’s goods and services are
within the realms of the band’s merchandising potential? Maybe, especially in a
world where man-band Hanson offer Mmmhops
beer, rapper 50 Cent got rich sellin’ bottled
water, and dance producer Deadmau5 provides headphones for
cats. These are artists of the new school, the land of brands, in which few
music videos go by without a branded smartphone - everything is product placement,
and music consumers know it. But
products such as the Kiss
Kasket, and the Slayer
Christmas jumper, show even the ‘classic acts’ are in on it.

Even
if furniture, construction and interior design could be contemplated as VAN
HALEN-authorised merch, would Ms Van Halen’s offering really cause the required
confusion? Even for grown up rock
chicks, is KELLYVANHALEN in pastels likely to create anything more than a
passing recollection of the hard rocking band (with whom, it may be remembered,
she was legitimately associated)?

Merpel Van Halen

Ms Van Halen
may be inclined to argue that her mark is her actual, legal name (it is), and therefore she should have a right to
use it in commerce. Indeed surnamesaretreated differently by the
Office: a mark may be refused if it “consists of or comprises a name ...
identifying a particular living individual except by his written consent...”
(US Trademark Act §1052(c)), or is "primarily merely a surname" (s 2(e)(4) of the Lanham Act), the reasoning being that people should be free to use their own name
in commerce - in the same way that descriptive terms should be free for
competitors’ use. In particular, the rarity of the VAN HALEN surname might
suggest some recourse, given the minimal (single figure) results for Van Halen
onWhitepages, for
example. However, the Office also takes into account use in media or
publicity, such that a rare surname appearing in the news may nonetheless be
recognised as merely a surname by the general public. Does the ubiquity of the
VAN HALEN name, and the family ties of the band, mean that it functions
primarily as a surname, rather than a trade mark? Raising this would
wholly undermine Ms Van Halen’s applications.

Any rights in one’s name do not overcome a
conflict with prior rights of another: “use
of one's surname is not a ‘defense’ to a trademark infringement action” Sardi's Restaurant Corp. v. Sardie.
The existence of an “own name defence” has been sometimes regarded as a myth.
These marks function like any other – and must be assessed on the basis of
likelihood of confusion under s. 2(d) of the Lanham Act - regardless of their nominative
meaning.

Why does the law treat surnames differently
in terms of registrability, but not when it comes to conflicting marks? Despite having been –Van Halen for nearly
thirty years, it seems Ms Van Halen may find herself somewhere between rock n’
roll and a hard place.”

Rock'n’roll and a hard place: Can Kelly Van Halen register her name as a trade mark?
Reviewed by Eleonora Rosati
on
Tuesday, November 05, 2013
Rating: 5

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